Quality Innovative Products LLC v. Brand 44 LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Quality Innovative Products, LLC (Ohio) and PlayMonster, LLC (Delaware)
  • Defendant: Brand 44, LLC (Colorado)
  • Plaintiff’s Counsel: Hahn Loeser & Parks LLP
• Case Identification: 1:18-cv-00369, D. Colo., 05/07/2018
• Venue Allegations: Venue is alleged to be proper in the District of Colorado because the Defendant resides in the district, has a regular and established place of business there, and has committed alleged acts of infringement in the district.
• Core Dispute: Plaintiffs allege that Defendant’s Slackers® Sky Saucer swing infringes three patents related to the design and construction of saucer-style swings.
• Technical Context: The technology concerns the mechanical structure of circular or saucer-shaped swings, a category of recreational products designed to provide multi-directional motion and enhanced stability for users.
• Key Procedural History: The complaint alleges that the Defendant had pre-suit knowledge of the asserted patents and infringement. Specifically, it alleges that an agent for the Plaintiff sent a proposed license for the ’450 Patent to the Defendant's president on March 19, 2014. The complaint further alleges that the Defendant was in possession of the Plaintiffs’ patented product and used an altered photograph of that product on its own packaging, facts which may be used to support the claim for willful infringement.

Case Timeline

Date	Event
2009-08-05	Priority Date for ’450, ’146, and ’316 Patents
2013-06-04	’450 Patent Issue Date
2014-03-19	Alleged notice of ’450 Patent via license offer
2015-06-05	Defendant allegedly possessed Plaintiffs' patented product
2015-06-30	’146 Patent Issue Date
2016-08-16	’316 Patent Issue Date
2018-05-07	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,454,450, "Swing," issued June 4, 2013 (’450 Patent)

The Invention Explained

• Problem Addressed: The patent's background section identifies limitations in prior art swings, such as conventional back-and-forth seats and tire swings, which can be difficult for some children to control and offer limited modes of motion (’450 Patent, col. 1:12-30). These prior designs were also described as deficient in terms of "ease of manufacture, ease of installation, ease of use, durability, variety of modes of operation, [and] safety" (’450 Patent, col. 1:34-37).
• The Patented Solution: The invention is a saucer-style swing with a rigid body that includes a concave, recessed seat for user stability and a surrounding peripheral edge containing openings for a tether system (’450 Patent, Abstract). This configuration is designed to allow the swing to move freely in any direction—including back-and-forth, sideways, and circular motions—and to twist, providing a more versatile and controllable user experience (’450 Patent, col. 3:9-14).
• Technical Importance: The design sought to create a more stable and versatile swing that was easier for a wider range of users to enjoy compared to traditional swing types (Compl. ¶25).

Key Claims at a Glance

• The complaint asserts at least Independent Claim 22 (Compl. ¶23).
• The essential elements of Independent Claim 22 include:
  • A body with a concave central portion defining a recessed concave seat and a circular peripheral edge, defining a circular disk.
  • The peripheral edge comprises a plurality of tether openings, a top wall, an outer circular wall, and a peripheral groove adjacent to the top and outer walls.
  • The tether openings open through the top wall and into the peripheral groove.
  • A tether system engaged with the tether openings, with at least part of the tether system located in the peripheral groove.
• The complaint does not explicitly reserve the right to assert other claims of the ’450 Patent but makes general allegations of infringement of "one or more claims" (Compl. ¶23).

U.S. Patent No. 9,067,146, "Swing," issued June 30, 2015 (’146 Patent)

The Invention Explained

• Problem Addressed: As a continuation-in-part of the application leading to the ’450 Patent, the ’146 Patent addresses the same deficiencies in prior art swings concerning user control, safety, and manufacturing simplicity (’146 Patent, col. 1:29-38).
• The Patented Solution: The ’146 Patent describes a similar saucer-style swing but claims different structural configurations and adds disclosures for non-circular shapes (’146 Patent, Fig. 10). The asserted independent claims focus on the specific relationship between the top wall, outer wall, tether openings, and a peripheral groove. For instance, Claim 1 requires the tether openings to be "defined in said top wall and open through said top wall into said peripheral groove," detailing the path of the opening itself (’146 Patent, col. 8:1-4).
• Technical Importance: This patent expands upon the original concept by claiming alternative geometries and refining the structural arrangement of the tethering system, potentially broadening the scope of protection (Compl. ¶40).

Key Claims at a Glance

• The complaint asserts Independent Claims 1 and 18, and Dependent Claims 2, 4-5, and 8 (Compl. ¶38).
• The essential elements of Independent Claim 1 include:
  • A body with a concave central portion and a peripheral edge with tether openings.
  • A tether system with portions engaged with the tether openings.
  • The peripheral edge comprises a top wall, an outer wall, and a peripheral groove adjacent to the top and outer walls.
  • A specific requirement that the tether openings are "defined in said top wall and open through said top wall into said peripheral groove."
• The essential elements of Independent Claim 18 are similar but describe the infringement nexus differently, requiring "at least part of said tether system located in said peripheral groove."

U.S. Patent No. 9,415,316, "Swing," issued August 16, 2016 (’316 Patent)

• Patent Identification: U.S. Patent No. 9,415,316, "Swing," issued August 16, 2016 (’316 Patent).
• Technology Synopsis: This patent, also in the same family, further details the structural integrity of the swing. It discloses and claims a swing body featuring a plurality of "seat support ribs" on the lower surface extending radially outward to reinforce the seat, and "peripheral edge support ribs" that interconnect the inner and outer walls of the peripheral edge to provide strength (’316 Patent, Abstract; Compl. ¶59).
• Asserted Claims: Independent Claims 1, 5, and 10, and Dependent Claims 2-4, 6-7, 9, and 11 (Compl. ¶56).
• Accused Features: The complaint alleges that the accused product incorporates the claimed reinforcing rib structures on both the main seat and within the peripheral edge (Compl. ¶59-60).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is the "Slackers® Sky Saucer" swing manufactured and sold by Defendant Brand 44, LLC (Compl. ¶12).

Functionality and Market Context

The Slackers® Sky Saucer is a saucer-style swing suspended from above, intended for recreational spinning and swinging motions (Compl. ¶10). The complaint alleges it is a commercial product sold throughout the United States (Compl. ¶5). An image of the accused product's retail packaging is provided in the complaint, illustrating its general appearance as a circular, saucer-like swing with a rope tether system (Compl. p. 4). The complaint alleges the Defendant markets the product through various channels, including providing product photos to dealers (Compl. ¶30).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits for each patent (’450 Patent Exhibit 3, ’146 Patent Exhibit 6), but these exhibits were not provided. The infringement theory is therefore summarized from the complaint's narrative allegations.

The complaint alleges that the Slackers® Sky Saucer swing embodies the patented inventions. For the ’450 and ’146 Patents, the core of the infringement allegation is that the accused swing possesses a body with a concave recessed seat surrounded by a peripheral edge that includes a "top wall," an "outer circular wall," and a "peripheral groove" for securing the tether system, as claimed (Compl. ¶26-27, 41-42).

• Identified Points of Contention:
  • Scope Questions: A principal dispute may arise over the definition of "peripheral groove". The claims of the ’450 and ’146 Patents require a specific structural relationship between a top wall, an outer wall, and the groove. The case may turn on whether the accused product’s method of securing its tethers constitutes a "groove" as contemplated by the patents, or if it is a structurally distinct, non-infringing design.
  • Technical Questions: What evidence will be presented to show that the accused swing contains the specific wall structures (e.g., "outer circular wall", "inner circular wall") and support ribs claimed in the various patents? The complaint's allegations are based on "information and belief" and visual inspection, and the actual internal construction of the accused product will be a key factual question for the court.

V. Key Claim Terms for Construction

• The Term: "peripheral groove" (from '450 Patent, Cl. 22; '146 Patent, Cl. 1, 18)

• Context and Importance: This term is the structural linchpin of the asserted independent claims of the lead patents. The existence and specific configuration of this groove, and its interaction with the tether system, appear to be a primary point of novelty. Practitioners may focus on this term because infringement will likely depend on whether the accused product's structure for retaining the tether ropes can be properly characterized as a "peripheral groove" defined by adjacent walls.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the groove’s function as allowing a rope or chain to "extend circumferentially" between tether openings (’450 Patent, col. 4:50-63). A party could argue that any channel or recess on the periphery that performs this function meets the definition.
  • Evidence for a Narrower Interpretation: The claims and figures provide a more specific structure. Claim 22 of the ’450 Patent requires the groove to be "defined adjacent said top wall and said outer circular wall." Figure 6 of the patents shows a distinct channel (12g) formed between an inner wall (12c) and an outer wall (12b), underneath a top wall (12a). A party could argue the term is limited to this specific multi-walled construction.

• The Term: "outer wall" (from '146 Patent, Cl. 1, 18)

• Context and Importance: The definition of "outer wall" is critical because it forms the outer boundary of the claimed "peripheral groove". The ’146 Patent discloses embodiments where this wall is not circular but polygonal (e.g., an octagon) (’146 Patent, Figs. 10-11). The construction of this term will determine whether the claims cover only certain shapes or a broader class of swing geometries.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification of the ’146 Patent explicitly states the peripheral edge can be a "non-rectangular polygon shape," such as an octagon (’146 Patent, col. 5:15-22), suggesting "outer wall" should not be limited to a circular structure.
  • Evidence for a Narrower Interpretation: In the primary embodiments shown (e.g., ’146 Patent, Fig. 6), the outer wall (12b) is depicted as a distinct structural element that projects downwardly from the top wall. A party might argue that "outer wall" requires such a discrete, projecting structure, not merely the outer boundary of a solid disk.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement under 35 U.S.C. § 271(b). The factual basis for this claim is that the Defendant allegedly advertises, sells, and provides instructions for the accused product, thereby actively encouraging and aiding its customers and distributors to use the product in an infringing manner (Compl. ¶29, 47, 65). The complaint specifically points to the Defendant providing product photos to dealers via a public Dropbox folder as an act of inducement (Compl. ¶30, 48, 66).
• Willful Infringement: The complaint makes detailed allegations to support willfulness. It alleges the Defendant had pre-suit knowledge of the ’450 Patent as of March 19, 2014, through a direct license offer (Compl. ¶15, 31). It further claims the Defendant had knowledge of the Plaintiffs' patented product by at least June 5, 2015 (Compl. ¶16). The most pointed allegation is that the Defendant used an altered and transposed photograph of the Plaintiffs’ own marked product for its product packaging, allegedly removing the Plaintiffs' trademark and changing the color of the tethers (Compl. ¶16-20). The complaint includes images purporting to show the original and the altered photographs (Compl. pp. 5-6).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of claim construction: Can the term "peripheral groove," as defined by a specific arrangement of top, outer, and sometimes inner walls in the patent specifications, be construed to read on the tether-attachment mechanism of the accused Slackers® Sky Saucer swing? The outcome will likely depend on a detailed comparison of the products' respective cross-sectional geometries.
• A second central question will be one of egregious conduct: Do the complaint's highly specific allegations—including receipt of a license offer and the use of an allegedly altered photograph of the Plaintiffs’ own product on Defendant’s packaging—rise to the level of wanton or bad-faith behavior required to support a finding of willful infringement and justify enhanced damages?